Appeal No. 2001-0918 Page 2
Application No. 08/758,106
GROUND OF REJECTION
Claims 1 and 4-7 stand rejected under 35 U.S.C. § 112, first paragraph,
as based on a disclosure that is insufficient to support or enable the claimed
invention.
We reverse.
DISCUSSION
According to the examiner (Answer, page 4), “[t]he successful treatment
of alopecia or baldness is generally accepted in the art as being ‘incredible’.”
With reference to In re Ferens, 417 F.2d 1072, 163 USPQ 609 (CCPA 1969) and
In re Oberweger, 115 F.2d 826, 47 USPQ 445 (CCPA 1940), the examiner finds
(Answer, bridging paragraph, pages 4-5), “[n]umerous methods and
compositions, alleged to have the same usefulness as the instant invention,
have proven in the past to be uniformly ineffective and unreliable.” Based on
these unsupported assertions, the examiner finds (Answer, page 5):
The evidence in the instant specification is deemed inadequate to
support the scope of the claims for the following reasons: 1) No
correlation between the test performed [from which appellants’ data
relates only to alopecia induced by chemotherapeutic agents] and
treatment of male pattern baldness in patients has been
demonstrated. 2) Treatment of disease has not been adequately
demonstrated[, and] 3) The showing in the specification of a single
tellurite compound is not deemed sufficient to support the scope of
claims 1 and 4-7.
The examiner, however, fails to support her position with factual evidence.
Instead, she relies on prior decisions (Ferens and Oberweger) dating back 23
years prior to appellants’ earliest effective filing date of August 13, 1992. In this
regard, we remind the examiner that it is the facts appearing in the record, rather
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